Talk:Draft Version 1.1

The below area is for discussion about the guidelines — changes, questions, objections, suggestions, what should be in or out, etc. Please put you comments underneath the heading that matches the part of the draft that you are discussing.

The "Commentary" pages that are linked at the bottom of the Guidelines are modeled after the "Annotations" portion of a Restatement or code. They are not meant as a place for discussion, but rather are for providing information to the end users of the Model Trademark Guidelines about legal, practical and ideological considerations embodied in the guidelines. (If you want to discuss what's on the Commentary page, use the "Discussion" tab for the appropriate Commentary page).

Universal considerations for all uses

Domain Names

You write "top or second level domain name"; I suspect you mean "Public Suffix + 1" - http://www.publicsuffix.org/. But perhaps it's better to say "in any label in a domain name".

-- Gerv (talk) 10:38, 25 March 2013 (EDT)

I was permitting for third level and directories, but query whether that should be allowed. I also never heard of "Public Suffix" before, so I'm not sure that readers will know what it means. A link to Wikipedia for the definition?

I chose top and second level because the cases fall along the lines that those are source identifying locations, and directories and tertiary don't tend to be. But we can exclude altogether if you think that's cleaner and/or better.

Pam

• The point is that "top" and "second" level don't actually mean what you want them to mean. I live in the UK, which has the ".uk" TLD. However, unlike ".com" and friends, it's currently subdivided into "co.uk" (companies), "org.uk" (organizations) and so on. So if you say "second level", you mean "co.uk", when actually you want to mean things like "foo.co.uk" (which is third level). The Public Suffix List is the data repository which provides a "map" of the DNS and shows where the "dividing lines" are between public and private registrations, because those dividing lines are in different places depending on where you are in the DNS. The PSL does have a Wikipedia page <http://en.wikipedia.org/wiki/Public_Suffix_List>, but you could also link directly to the publicsuffix.org site.

-- Gerv (talk) 11:41, 25 March 2013 (EDT)

Ah, I see what you mean -- correct that top and second don't always work. Your approach makes more sense; I'll try to find a way to make it understandable for those of us less informed.

Pam

I just deleted "top and second level," effectively prohibiting use in domain names altogether. It certainly is the easiest way to describe it and I think the corner cases (third level) don't happen often enough to make an issue of it. And a directory I wouldn't consider a "domain name" so it doesn't prohibit use in directories.

Pam

Use for software

Uses we consider non-infringing

A change was made to alter the title to "Uses which do not require a license," which I reverted. This is the explanation.

There are only two universes, infringing and non-infringing, and for some infringing uses one would have a license defense. I am concerned that characterizing non-infringing uses as "not requiring a license" creates a bit of legal limbo: are they infringing or not? If infringing, but nevertheless allowed for some unexplained reason, then one could argue that the use potentially invalidates the trademark. Characterizing them as "non-infringing," though, makes it clear to courts and users what potential set of legal standards might apply to a given type of use.

Another reason is that there is no duty to police non-infringing mark, so characterizing them as non-infringing will help ensure that one isn't imposed because of a misunderstanding about the character of the use.

Pam (talk) 20:46, 30 April 2013 (EDT)

I also removed the statement "Some references to trademarks and service marks do not require licenses, becuase they are allowed under law in the absence of a license. These uses are sometimes referred to as 'fair use,' but they are more accurately called a 'nominative use.' The uses we describe below are examples of this kind of use."

I removed this statement because not all the non-infringing uses are nominative uses. As described below, allowing the use of the mark on a new copy of software would not be a nominative use, as nominative use is currently understood in trademark law. So in this section, the first use (distribution of unmodified code) is non-infringing because it is use on authentic goods, the next two sections (modified code, and statements of compatibility) are case book examples of nominative use, and the fourth use (community affiliation) is non-infringing because, as long as the mark is used within the parameters described, there is no misunderstanding about what the relationship is between the code and the community so there would be no confusion.

Pam (talk) 21:21, 30 April 2013 (EDT)

Distribution of unmodified source code or unmodified executable code we have compiled

This was removed: "You should not remove our Work Marks or Logos from an unmodified distribution, nor should you replace them with your own trademarks or logos. This would mislead recipients into thinking that you, and not our project, are the source of the software." Removal based on discussion on mailing list that the requirement was not consistent with open source principles and ineffective. First mail in thread here: http://modeltrademarkguidelines.org/pipermail/discussion_modeltrademarkguidelines.org/2013-April/000012.html

Pam (talk) 11:20, 2 May 2013 (EDT)

Official Branding Flag?

I wonder if it is good practice to encourage software projects to build their software with a compile-time flag which makes it easy to include or exclude their trademarks? This would then allow the trademark policy to say "we as a project guarantee that if you don't enable this flag, then our trademarked logos and names won't be used in the package in a way which requires permission. And if we accidentally do include a logo in the non-branded version, we won't give you grief about it." That enables people to opt into or out of trademark use easily.

Mozilla software has a "--enable-official-branding" flag (so official branding is disabled by default) although I'm not sure we provide the guarantee in that form.

If we do want to encourage this practice, what's the best way to do it? Include sample text in the policy, and encourage projects to alter their software to make the text true?

-- Gerv (talk) 10:20, 25 March 2013 (EDT)

Do you have problems with people modifying the code but enabling the flag? I agree we can't provide a guarantee that if you enable the flag then the software is ok -- I don't know enough about how the flag works but I'm assuming it isn't robust enough to make judgment calls about the quality of the changes, e.g., like flagging whether the software has passed a test suite. Is that something that could come about, though?

I've added it to a "use we do not consider infringing," so take a look and see whether it looks right. I added that you also not modify the code before compiling because of the above concern. I don't know whether this would lead to adoption of the flag-system, but it would at least get the concept out there.

Pam

Media restrictions?

Is this section intended to restrict distribute only to "optical media, memory stick or download"? That sounds like a paragraph ripe for unintended technological obsolescence :-) There's already rotating magnetic media that you've missed out, and I'm sure people will invent new media forms.

-- Gerv (talk) 10:33, 25 March 2013 (EDT)

I'm open to suggestions, but I wanted to make sure it was limited to unmodified code only and the purpose of the specifics on the list was ejusdem generis. I've had discussions in the past about machine images, but it was problematic because there were changes to the code necessary for the machine image to work properly and so it couldn't be described as "unmodified" and we also couldn't agree on a standard. For that reason I thought it wisest to limit the use to known media. And the guidelines aren't legislative, we can change them whenever the heck we want.

Pam

Use of trademarks to show community affiliation

Porn problem?

What if a community wants to restrict the logo from being used in pornographic or other themes, skins or personas? Do we provide an option for that? On a more general question, there doesn't seem to be a non-disparagement clause anywhere. Do we intend to have one?

-- Gerv (talk) 10:33, 25 March 2013 (EDT)

I did not provide an option for porn and deliberately did not mention disparagement. The "disparagement" in virtually everyone's trademark guidelines has always troubled me, particularly for open source software. First off, I don't think the way that "disparagement" is used in them is meant as a legal definition but rather is being used as an ordinary lay term. In that case, it is not necessarily a legal wrong and so I was uncomfortable prohibiting it. I would be afraid someone would try to overreach claiming "disparagement" on something as societally beneficial as a negative review. I would find that offensive in any case, and particularly offensive in the open source community.

There potentially are legal claims for porn (tarnishment) and product disparagement (akin to slander or libel, except against things). I don't think that the guidelines have waived those potential claims if they were to occur. So my opinion was to simply be able to rely on enforcement of actual legal wrongs rather than mention them expressly.

Thoughts?

Pam

Use for non-software goods and services

Uses we consider non-infringing

A change was made to alter the title to "Uses which do not require a license," which I reverted. This is the explanation.

There are only two universes, infringing and non-infringing. All the uses described in this section don't require a license because they are non-infringing. I am concerned that characterizing them as "not requiring a license" creates a bit of legal limbo: are they infringing or not? If infringing, but nevertheless allowed for some reason, then one could argue that the use potentially invalidates the trademark. Characterizing them as "non-infringing," though, makes it clear to courts and users what legal standard applies to a given type of use.

Pam (talk) 20:41, 30 April 2013 (EDT)

Uses for which we are granting a license

User groups

Membership Fees

Some user groups charge membership fees for the purposes of venue hire, etc. Can we be a little more flexible than "no membership fees at all"?

-- Gerv (talk) 10:38, 25 March 2013 (EDT)

Absolutely! I was just trying to keep out profit-making. Suggestions for revision?

Pam

I went with "doesn't make a profit." I didn't want to say "non-profit" because I didn't want to suggest it has to be formal non-profit entity. Do you think that's unproblematic enough?

Pam

General considerations about trademarks and their use

What trademark law is about

What is "nominative" use?

I removed the statement "Nominative use also includes the redistribution of 'authentic' goods. For our project, that means unmodified binaries that we have produced using our quality assurance process. When you are redistributing authentic goods, nominative use allows you to use the word mark version to describe what you are providing -- and of course, allows you to retain the logo on the product in the form you recieved it."

I don't believe that manufacturing identical goods and putting the trademark on them would be considered a nominative use. A nominative use is use of a third party mark to describe the third party's goods, not your own goods.

Allowing someone to create new goods, but nevertheless mark them as authentic goods, is a fairly unique situation in trademark law. It could be characterized as a license (e.g., in the way that you would give an OEM manufacturer a license to use the marks on goods it manufactures for you). Instead, at the moment in the guidelines, it's characterized as a non-infringing use because the intangible goods, the software code, is authentic, it is simply a new tangible "carrier" for the goods. I did it this way, versus characterizing it as a license, because it seems more consistent with open source principles. It's also more consistent with German case law granting some latitude in marking open source goods, even where they were modified.

I worry about characterizing the use of the mark on new copies of authentic goods as "nominative" because it would be an extensive of the law that can backfire - why wouldn't it also be nominative even where the goods are modified?

Pam (talk) 21:09, 30 April 2013 (EDT)

Proper trademark use

Comment from Tmarble about Proper use of Trademarks: "I think it will be easier to read of the examples all have parallel structure... A counter example first (Unacceptable) followed by a positive example (Acceptable)."

I've corrected it.